Ex Parte Parry

Board of Patent Appeals and Interferences

May 1, 2009

09925650 (B.P.A.I. May. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TRAVIS J. PARRY
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Appeal 2009-0509
Application 09/925,650
Technology Center 2600
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Decided:1 May 1, 2009
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
JOHN A. JEFFERY, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0509
Application 09/925,650

This is a decision on appeal under 35 U.S.C. § 134 of the final
rejection of claims 1 through 26. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed towards a printing method where a printer
can acquire and print documents from a network address. See Spec. 2-5.
Claim 1 is representative of the invention and reproduced below:
1. A printing method, comprising:
receiving print stream data adapted to contain a network
address, at a printer;
determining, at the printer, whether a URL or external
network option is enabled;
detecting at the printer if a network address is in the received
data;
sending on the Internet or other network, an access request
from the printer to an administrative control entity separate and
distinct from a user entity instigating the print stream data, for a
document to the network address;
retrieving the document from the network address at the
printer in the instance the administrative control entity grants
the access request;
merging, at the printer, the document from the network
address into the print stream data to form a modified document;
and
printing the modified document.

REFERENCES
Wolff US 5,848,413 Dec. 8, 1998

Russell US 6,375,078 B1 Apr. 23, 2002
(filed Jan. 13, 1999)
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Application 09/925,650

Tabata US 6,537,324 B1 Mar. 25, 2003
(filed Feb. 13, 1998)

REJECTIONS AT ISSUE
The Examiner rejected claims 1-10, 17, 18, and 22-26 under 35
U.S.C. § 102(e) as being anticipated by Tabata. Ans. 3-5.
The Examiner rejected claims 11-14 under 35 U.S.C. § 103(a) as
being unpatentable over Tabata in view of Russell. Ans. 5-6.
The Examiner rejected claims 15, 16, and 19-21 under 35 U.S.C.
§ 103(a) as being unpatentable over Tabata in view of Wolff. Ans. 6-7.

ISSUE
Rejection of claims 1-10, 17, 18, and 22-26 under 35 U.S.C. § 102(e) as
being anticipated by Tabata

Appellant argues on pages 5 through 11 of the Appeal Brief and pages
2 through 6 of the Reply Brief that the Examiner’s rejection of claim 1 is in
error. Appellant argues that Tabata does not teach merging a document at
the printer with print stream data to form a modified document. App. Br. 8.
Thus, with respect to claim 1,2 Appellant’s contention presents us
with the issue: has Appellant shown that the Examiner erred in finding

2 Appellant’s statements on pages 11-13 of the Appeal Brief and pages 6-9
of the Reply Brief directed to claims 2-10, 17, 18, and 22-26 merely identify
that these claims are allowable for the reasons that claim 1 is allowable.
These statements do not amount to separate arguments under 37 CFR
§ 41.37(c)(1)(vii). Accordingly, claims 2-10, 17, 18, and 22-26 are grouped
with claim 1.
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Application 09/925,650

Tabata teaches merging, at the printer, the document from the network
address into the print stream data to form a modified document?

Rejection of claims 11-14 under 35 U.S.C. § 103(a) as being unpatentable
over Tabata in view of Russell

Appellant argues on page 8 of the Appeal Brief and page 9 of the
Reply Brief that the Examiner’s rejection of claims 11-14 is in error.
Appellant’s arguments assert the same errors asserted with respect to claim
1.
Thus, with respect to claims 11-14, Appellant’s contentions present us
with the same issue as claim 1.

Rejection of claims 15, 16, and 19-21 under 35 U.S.C. § 103(a) as being
unpatentable over Tabata in view of Wolff

Appellant argues on page 8 of the Appeal Brief and page 9 of the
Reply Brief that the Examiner’s rejection of claims 15, 16, 19, 20, and 21 is
in error. Appellant’s arguments assert the same errors asserted with respect
to claim 1.
Thus, with respect to claims 15, 16, and 19-21, Appellant’s
contentions present us with the same issue as claim 1.

FINDINGS OF FACT
1. Tabata teaches a document information management system that
contains a file server and a Paper User Interaction (PUI) station
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Application 09/925,650

apparatus that includes: a scanner, network terminal equipment,
and a printer integrated into one apparatus. Abstract, col. 27, ll. 9-
25 and 31-33, and Fig. 24.
2. The scanner reads image data from a medium form. Col. 27, ll.
12-14 and Fig. 24.
3. The network terminal equipment receives image data from the
scanner, uses the linkage information and selection information in
the image data to identify an address of the selected correlated
information, and retrieves, from a file server the appropriate
correlated information. Col. 27, ll. 16-20 and Fig. 24.
4. The printer prints the retrieved correlated information file, which
includes the medium form information, on recording paper. Col.
26, ll. 44-46, col. 27, ll. 20-23, and Fig. 24.

PRINCIPLES OF LAW
Office personnel must rely on Appellant’s disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002) (internal quotation marks and citations omitted; emphasis in
original).
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Application 09/925,650

It is well settled that in order for the Examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir. 1988);
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick, 730
F.2d 1452, 1458 (Fed. Cir. 1984).

ANALYSIS
Rejection of claims 1-10, 17, 18, and 22-26 under 35 U.S.C. § 102(e) as
being anticipated by Tabata

Appellant’s arguments have not persuaded us that the Examiner erred
in rejecting claim 1. Claim 1 recites “detecting at the printer if a network
address is in the received data; [and]…merging, at the printer, the document
from the network address into the print stream data to form a modified
document.” Neither Appellant’s Specification nor Appellant’s arguments
provide a definition of the term “print stream data.” Thus, we consider the
scope of the claim term “print stream data” to include any information that is
sent to the printer to subsequently be printed. This interpretation is
consistent with Appellant’s Specification since Appellant equates the data
applied to the input/output circuitry with print stream data and data
comprising an email or an email attachment, or data that is scanned into the
printer system. Spec. 7, ¶ [0033].
Appellant first argues that Tabata does not teach that an address is
detected at a printer or detected within the print stream data. App. Br. 10.
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Application 09/925,650

However, Tabata teaches a document information management system that
contains a file server and a Paper User Interaction (PUI) station apparatus
that includes: a scanner, network terminal equipment, and a printer
integrated into one apparatus. FF 1. The scanner reads image data from a
medium form and sends the data to the network terminal equipment. FF 2.
We consider the scanned image data to be print stream data, since the
scanned image data will subsequently be printed. The network terminal
equipment receives the image data and uses any linkage information and
selection information in the image data to identify an address of the selected
correlated information. FF 3. Therefore, since the scanner (which reads
print data including image data), network terminal equipment (which
determines an address), and printer are all parts of the same unit, Tabata
does, in fact, teach detecting an address at a printer and within the print
stream data as claimed.
In addition, Appellant argues that Tabata does not teach merging a
document retrieved from a detected address with the medium form
information. App. Br. 10-11. However, Tabata teaches that the network
terminal equipment identifies an address and retrieves, from a file server, the
appropriate correlated information. FF 3. Subsequently, the printer prints
the retrieved correlated information file, which includes the medium
information, on recording paper. FF 4. As a result, the medium form
information and the correlated information are merged together before the
document is printed. Therefore, since the correlated information file is
merged with the medium form information, Tabata does teach the argued
limitation. Accordingly, we sustain the Examiner’s rejection of claim 1. As
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a result, we also affirm the Examiner’s rejection of claims 2-10, 17, 18, and
22-26 which are grouped with claim 1.

Rejection of claims 11- 14 under 35 U.S.C. § 103(a) as being unpatentable
over Tabata in view of Russell

Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 11-14. These claims ultimately depend upon
claim 1. Appellant’s arguments present the same issues discussed with
respect to claim 1 (App. Br. 13). Therefore, we sustain the Examiner’s
rejection of claims 11-14 for the reasons discussed supra with respect to
claim 1.

Rejection of claims 15, 16, and 19-21 under 35 U.S.C. § 103(a) as being
unpatentable over Tabata in view of Wolff

Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 15, 16, and 19-21. These claims ultimately
depend upon claim 1. Appellant’s arguments present the same issues
discussed with respect to claim 1 (App. Br. 14). Therefore, we sustain the
Examiner’s rejection of claim 15, 16, and 19-21 for the reasons discussed
supra with respect to claim 1.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in finding that
Tabata teaches merging, at the printer, the document from the network
address into the print stream data to form a modified document.

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Application 09/925,650

SUMMARY
The Examiner’s rejection of claims 1 through 26 is affirmed.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ELD

HEWLETT PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
P.O. BOX 272400
FORT COLLINS, CO 80527-2400
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